UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/787670

 

This letter responds to applicant’s communications filed on December 27, 2006.

 

Status

 

In the initial office action the examining attorney required applicant (i) provide a drawing without ® symbols, (ii) provide a complete color claim and description, (iii) clarify the identification of goods and meet the requirements for a combined application if necessary, (iv) claim ownership of prior registrations and (v) disclaim descriptive words in the mark.  

 

Applicant petitioned to revive the application since its response was untimely.  The application was revived before abandonment in the office records. 

 

Applicant’s response to items (i) and (iii) are acceptable and the associated requirements are WITHDRAWN.  Applicant did not respond to the disclaimer requirement (v) or claim of ownership requirement (iv).  Applicant provided an amended color claim and description (ii), however as indicated below the color location statement is unacceptable.  Accordingly, these requirements (ii), (iv) and (v) are maintained and made FINAL.  37 C.F.R. 2.64(a). 

 

Disclaimers – FINAL REQUIREMENT

For the reasons set forth in the initial office action, which is hereby incorporated by reference, applicant must disclaim the descriptive wording “clean” and “whitening” apart from the mark as shown because it merely describes functions of the goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

Presumably the oral care products clean and whiten the users teeth.  The examining attorney refers to the attached dictionary definitions.  As such the words “clean” and “whitening” must be disclaimed apart from the mark. 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “clean” and “whitening” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

Claim of Ownership – FINAL Requirement

As indicated in the initial office action, if applicant is the owner of U.S. Registration Nos. 1928463, 2166065, 2186108 and 2186122, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

             Applicant is the owner of U.S. Registration Nos. 1928463, 2166065, 2186108 and 2186122.

 

Color Claim and Color Location Description – FINAL Requirement

 

As stated in the initial office action, applicant’s color claim and color description are unacceptable because applicant claims the color blue twice and because applicant must indicate that the words “plus whitening” are in blue.  Applicant has failed to comply with this requirement.  Applicant must submit the following color claim and color description: 

 

(1)   a statement that “the color(s) silver, white, red, blue, yellow and green are claimed as a feature of the mark;” and

 

(2)   a separate description of where the colors appear in the mark, i.e., “The mark consists of a silver background with repeating silver parallel lines on an angle with the word ‘Colgate’ in white superimposed on a red panel.  The word "total" appears in the color yellow and is surrounded with an oval arrow spectrum design in a spectrum of colors beginning at the arrow head in red and continuing to the end in the colors blue, green, yellow and red. The arrow points to a stylized yellow clock with a white face. Beneath the spectrum design are the words "professional clean" and "plus whitening,” which are in the color blue.  Underneath and to the right of these words is a white toothpaste swirl outlined in the color silver. To the right of the spectrum is a white background with silver parallel repeating lines with the words "helps maintain" in the color blue and the words "dentist clean" in the color red.”  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

Apart from the color location description, a description of the mark will not be printed on any registration that may issue from this application.  TMEP §808.03.  The description is unnecessary because it is duplicative of the required color location description and because the mark is composed of easily recognized letters, numerals, designs, or figurative elements.  TMEP §§808.01(a) and 808.01(b). 

 

Appropriate Response

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Mark Rademacher/

Examining Attorney

Law Office 114

Trademarks

United States Patent and Trademark Office

Ph:  (571) 272-9723

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.